Merlet & Anor v Mothercare Public Ltd

Copyright in a simple technical drawing can subsist where the drawing originates with its author and embodies sufficient skill and labour; artistic quality and novelty are unnecessary. An article may reproduce a drawing indirectly, even if the copier never saw it, provided the drawing was used to make the article and a substantial part was reproduced. Under section 9(8) of the Copyright Act 1956, the three-dimensional object must, viewed as a whole, appear to a non-expert to be a reproduction of the drawing. The comparison is made with the copyright work as created. A later associated drawing cannot supply missing information.

The appellants designed and manufactured a baby cape. They claimed copyright in two cutting-plan drawings, P2 and P7, and alleged that the respondent copied the resulting garment. The High Court rejected infringement claims based on the prototype garment and the drawings. The appellants accepted on appeal that the prototype was not a work of artistic craftsmanship. The issues were whether the drawings had been infringed and whether section 9(8) of the Copyright Act 1956 supplied a defence where a two-dimensional drawing had been converted into a three-dimensional garment.

1. The court held that P2 and P7 were original artistic works. Originality concerned the form of expression rather than the ideas expressed. The court adopted the observations in British Northrop Ltd v Texteam Blackburn Ltd & Anr [1974] RPC 57: a drawing need not be artistically sophisticated or novel, and simplicity alone did not prevent copyright.
2. Copyright in a drawing could be infringed by copying an article which reproduced the drawing, even where the copier had not seen the drawing. The appellants nevertheless had to show that the drawings were used in making the production garment. The evidence established that P2 was used to make the Raincosy, which the respondent copied.
3. Substantiality was determined by quality rather than quantity, applying the approach in Ladbrooke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273. The shape and dimensions of P2’s hood and body panels, and the position of the tape, embodied sufficient skill and labour to constitute a substantial part. P7 was used only for the cut-out measurements and was not substantially reproduced.
4. Section 9(8) required the court to ask whether the whole three-dimensional object appeared to persons who were not experts to be a reproduction of the two-dimensional artistic work. The judge could compare the object with the drawing and consider written matter on the drawing, following the approach in L.B. (Plastics) Ltd v Swish Products Ltd [1979] 1 RPC 551.
5. The court was confined to P2 as the copyright work. P7 was subsequent, was not referred to in P2, and could not be admitted as extrinsic evidence supplying a later explanation. The court distinguished the argument based on Solar Thomson Engineering Co. Ltd v Barton [1977] RFC 537. P2 alone did not enable a non-expert to recognise the whole garment as its reproduction. The statutory defence therefore succeeded. The appeal was dismissed with costs and leave to appeal was refused.

• Court of Appeal (Civil Division) The appeal was dismissed with costs. The court held that P2 had been infringed but that the statutory defence under section 9(8) of the Copyright Act 1956 applied. Leave to appeal was refused. [1985] EWCA Civ 19
• High Court of Justice, Chancery Division Mr Justice Walton found against the appellants on infringement of both the prototype garment and the drawings in a judgment delivered on 13 April 1984.